Do You Know The Difference Between Registered And Unregistered Trademark?
Trademarks in India may be registered or unregistered under the Indian Trademarks Act, 1999 (‘the Act’). Matters pertaining to Indian registered trademarks and the rights which flow from registration under the Act are generally consistent with trademark laws in the United States, European Union members and other members of the World Intellectual Property Organisation (WIPO).
What is a registered trademark?
The law considers a trademark to be a form of property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace or through registration under law.
Benefits of registered Trademarks:
A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or “colourfully” similar to the “registered” products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. The infringement of registered trademarks can lead to legal suits and the burden of proof of the plaintiff is eased due to registration.
What are unregistered trademarks?
Unregistered Trademarks is one which does not possess legal benefits. But in some cases unregistered trademark may get common law benefits. Unregistered Marks are defined as marks which are not used in relation to goods or services (that is names, marks or logos used in relation to a business) or marks which otherwise do not qualify for registration may nevertheless be protected by means of passing-off action. To succeed in such an action, it is necessary to establish that unregistered mark has comparable goodwill or reputation in connection with the product, service or business with which it is used.
The owner of an unregistered trademark may be able to prevent use by another party of an infringing mark pursuant to the common law tort of passing off or under s. 27 which read as – no action for infringement of unregistered trademark. But it also recognises the common law right of the trademark owner to take action against any person for passing off goods as the goods of another person or as services provided by another person or the remedies thereof. An action of passing off is based on common law of tort and is founded on the principle that ‘no man is permitted to use any mark, sign, symbol, device or means whereby without making a direct representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is ultimate purchaser’.
How is the unregistered trademarks protected
The action against passing off is based on the principle that ‘a man may not sell his own goods under the pretense that they are the goods of another man’. Passing off is a species of unfair trade competition by which one person seeks to profit from the reputation of another in a particular trade or business. Passing off action is a direct subject matter of the law of tort or common law of right, that is, case law. There are certain essential ingredients of a passing off action. The plaintiff has to prove that there is a similarity in the trade names; the defendant is deceptively passing off his goods as those of the plaintiff; or that there is bound to be confusion in the minds of the customers. The test to be applied in such matters is as to whether a man of average intelligence and of imperfect recollection would be confused.
Difference between registered and unregistered trademark-
The basic difference between the protections available for registered trademarks and unregistered trademarks is that the former is a statutory remedy and the latter is a common law remedy. In order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. Unregistered trademarks may gain protection, where the goods and services have a highly significant position in the market for sales in that particular class of goods and services. These trademarks are used in the course of trade which is well known to the public in India.